OPPOSITION No B 2 685 942

Airobot BVBA, Kempische Steenweg 311/1.02, 3500 Hasselt, Belgium (opponent), represented by IP Hills NV, Hubert Frère-Orbanlaan 329, 9000 Gent, Belgium (professional representative)

a g a i n s t

Beijing BRI-AIR Technology Development Co., Ltd, No 3 commercial of the third floor, block C, Tianlang Park, Chaoyang District, Beijing, People’s Republic of China (applicant), represented by Agency Arnopatents, Brivibas street 162/2-17, Riga, 1012 Latvia (professional representative).

On 13/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 685 942 is partially upheld, namely for the following contested goods and services:

Class 12:         Civilian drones; Military drones; Hot air balloons; Amphibious airplanes; Aeroplanes; Dirigible balloons [airships]; Upholstery for vehicles; Vehicle bumpers; Aircraft; Security harness for vehicle seats.

Class 28:         Drones [toys]; Toy models; Gyroscopes and flight stabilizers for model aircraft; Controllers for toys; Flying discs [toys]; Scale model kits [toys]; Toys; Games; Balls for games; Body-building apparatus.

Class 35:         Updating and maintenance of data in computer databases.

Class 37:         Airplane maintenance and repair; Vehicle washing; Anti-rust treatment for vehicles; Vehicle breakdown repair services; Vehicle maintenance; Repair information; Rebuilding machines that have been worn or partially destroyed; Tire balancing; Rustproofing; Interference suppression in electrical apparatus.

2.        European Union trade mark application No 15 067 523 is rejected for all the above goods and services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 067 523. The opposition is based on Benelux trade mark registration No 974 047. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 7: Machine tools; motors (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements, other than hand-operated; incubators; vending.

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling , checking (supervision), life (rescue) and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or sending electrical current; devices for the recording, transmitting and reproducing of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital media; mechanisms for devices with payment; cash registers, calculating machines, data processing equipment and computers; software; fire extinguishers.

Class 12: Vehicles; apparatus for locomotion by land, air or water; unmanned vehicles / vehicles.

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

Class 38: Telecommunications.

Class 39: Transport; packaging and storage of goods; travel arrangement.

Class 41: Education; education; relaxation; sporting and cultural activities.

Class 42: Scientific and technological services as well as associated research and design, among other things in the area of (systems) unmanned vehicles; services in the area of industrial analysis and research; design and development of computer hardware and software.

The contested goods and services are the following:

Class 12: Civilian drones; Military drones; Hot air balloons; Amphibious airplanes; Aeroplanes; Dirigible balloons [airships]; Upholstery for vehicles; Vehicle bumpers; Aircraft; Security harness for vehicle seats.

Class 28: Drones [toys]; Toy models; Gyroscopes and flight stabilizers for model aircraft; Controllers for toys; Flying discs [toys]; Scale model kits [toys]; Toys; Games; Balls for games; Body-building apparatus.

Class 35: Provision of an on-line marketplace for buyers and sellers of goods and services; Negotiation and conclusion of commercial transactions for third parties; Provision of commercial and business contact information; Presentation of goods on communication media, for retail purposes; Import-export agency services; Procurement services for others [purchasing goods and services for other businesses]; Updating and maintenance of data in computer databases; Sponsorship search; Psychological testing for the selection of personnel; Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies.

Class 37: Airplane maintenance and repair; Vehicle washing; Anti-rust treatment for vehicles; Vehicle breakdown repair services; Vehicle maintenance; Repair information; Rebuilding machines that have been worn or partially destroyed; Tire balancing; Rustproofing; Interference suppression in electrical apparatus.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 12

The contested civilian drones; military drones; hot air balloons; amphibious airplanes; aeroplanes; dirigible balloons [airships]; aircraft are included in the broad category of the opponent’s apparatus for locomotion by air. Therefore, they are identical.

The contested upholstery for vehicles; vehicle bumpers are similar to the opponent’s vehicles, as they can have the same producers, end users and distribution channels. Furthermore, they are complementary.

The contested security harness for vehicle seats is similar to a low degree to the opponent’s vehicles, as they can have the same distribution channels. Furthermore, they are complementary.

Contested goods in Class 28

Toys; games are identically contained in both lists of goods (including synonyms).

A plaything is defined as ‘a toy’ (information extracted from Oxford Dictionaries on 28/03/2017 at www.oxforddictionaries.com). Given this, the contested drones [toys]; toy models; flying discs [toys]; scale model kits [toys]; balls for games are included in the broad category of the opponent’s playthings. Therefore, they are identical.

The contested body-building apparatus is included in the broad category of the opponent’s gymnastic and sporting articles not included in other classes. Therefore, they are identical.

The contested gyroscopes and flight stabilizers for model aircraft; controllers for toys are devices used as essential accessories that provide stability or control over the direction of a model aircraft or toy. Given this, there is a link with the opponent’s games and playthings, since they can have the same producers, end users and distribution channels. Furthermore, they are complementary. Therefore, they are considered similar.

Contested services in Class 35

The contested updating and maintenance of data in computer databases are similar to the opponent’s software in Class 9. These goods and services all belong to the IT sector. They have the same distribution channels, target the same end consumers and are complementary.

Retail services in general (i.e. the specification is not limited to the sale of particular goods) is a vague term, as described in the Guidelines, Part C, Opposition,  Section 2, Double identity and likelihood of confusion, Chapter 2, Comparison of goods and services, point 1.5.2.

Contrary to the opponent’s understanding, the current practice is that retail services in general are not similar to any goods that are capable of being sold by retail (Guidelines, Part C, Opposition, Section 2, Double identity and likelihood of confusion, Chapter 2, Comparison of goods and services, point 7.1). Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Furthermore, the method of use of those goods and services is different. They are neither in competition with, nor necessarily complementary to, each other.

This same principle applies to the services rendered in connection with different forms exclusively consisting of activities around the actual sale of goods, such as retail store services, wholesale services, internet shopping, catalogue or mail order services, etc. (to the extent that these fall into Class 35).

Consequently, the contested provision of an on-line marketplace for buyers and sellers of goods and services; procurement services for others [purchasing goods and services for other businesses] are dissimilar to the opponent’s goods in Class 7 (inter alia, machine tools, motors and agricultural implements), Class 9 (in general, different types of apparatus and instruments, recording discs, computers and software), Class 12 (vehicles) and Class 28 (inter alia, games and playthings, gymnastic and sporting articles), as well as to the opponent’s services in Class 38 (telecommunications), Class 39 (transport, packaging and storage of goods, and travel arrangement), Class 41 (education, relaxation, sporting and cultural activities) and Class 42 (scientific and technological services, services in the area of industrial analysis and research, design and development of computer hardware and software).

The contested negotiation and conclusion of commercial transactions for third parties; provision of commercial and business contact information; presentation of goods on communication media, for retail purposes; sponsorship search; psychological testing for the selection of personnel have nothing in common with any of the opponent’s goods and services. They belong to different areas of activity, have different purposes and are provided by different types of companies. Furthermore, these services are neither complementary to nor in competition with the opponent’s abovementioned goods and services. Consequently, they are dissimilar.

Import and export services relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. As they are classified in Class 35, they are considered to relate to business administration. These services do not relate to the actual retail or wholesale of the goods; they would be preparatory or ancillary to the commercialisation of such goods. For these reasons, goods are to be considered dissimilar to import and export services for those goods. The fact that the subject matter of the import/export services and the goods in question may be the same is not a relevant factor for a finding of similarity (Guidelines, Part C, Opposition, Section 2, Double identity and likelihood of confusion, Chapter 2, Comparison of goods and services, point 7.7). Therefore, the contested import-export agency services have nothing in common with any of the opponent’s goods and services. They belong to different areas of activity, have different purposes and are provided by different types of companies. Furthermore, these services are neither complementary to nor in competition with the opponent’s goods and services. Consequently, they are dissimilar.

The contested retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies are dissimilar to all of the opponent’s goods in Classes 7, 9, 12 and 28. Retail services relating to the sale of particular goods and other goods are not similar (Guidelines, Part C, Opposition, Section 2, Double identity and likelihood of confusion, Chapter 2, Comparison of goods and services, point 7.3). They have different natures, intended purposes and methods of use. Their producers, distribution channels and relevant publics are also different. Furthermore, these goods are neither complementary nor in competition. Similarly, these contested services and the opponent’s services in Classes 38, 39, 41 and 42 are also dissimilar, since they belong to different areas of activity, satisfy different needs and are provided by different types of companies. Furthermore, these services are neither complementary nor in competition.

Contested services in Class 37

The contested airplane maintenance and repair are similar to the opponent’s apparatus for locomotion by air in Class 12, because the latter include aeroplanes. Aeroplanes are complex transportation apparatus built by a limited number of undertakings, owing to the high level of expertise required. These companies normally provide their clients with the necessary maintenance and repair services throughout the working life of these machines. Therefore, the goods and services under comparison are normally produced/provided by the same undertakings and target the same users. In addition, the maintenance and repair services at issue are essential for the proper functioning of the aeroplanes.

The contested vehicle washing; anti-rust treatment for vehicles; vehicle breakdown repair services; vehicle maintenance; repair information; rebuilding machines that have been worn or partially destroyed; tire balancing; rustproofing; interference suppression in electrical apparatus are all services related to the repair, maintenance and installation of parts of vehicles. The undertakings that produce the opponent’s vehicles in Class 12 also offer these services, and consumers are aware of this fact. Moreover, using the same undertaking for both the goods and the services gives a certain guarantee (of quality), and the spare parts may have particularities that mean that only that undertaking can render the services in an appropriate way. To this extent, there is a certain interdependence leading to a complementary character. These goods and services have the same end users and may have the same producers and distribution channels. Therefore, these contested services are similar to the opponent’s vehicles.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar to varying degrees are directed at the public at large, such as civilian drones in Class 12, toys and games in Class 28 and vehicle washing in Class 37, as well as at business customers with specific professional knowledge or expertise, since some specialised goods and services are involved, such as military drones and aeroplanes in Class 12, gyroscopes and flight stabilizers for model aircraft in Class 28 and airplane maintenance and repair in Class 37.

The degree of attention may vary from average to high, depending on the price, sophistication, or terms and conditions of the purchased goods and services.

Taking into consideration the price of some of the relevant goods, such as vehicles and aeroplanes, consumers are likely to pay a higher degree of attention than for less expensive purchases. For instance, it is to be expected that consumers will not buy a car, either new or second-hand, in the same way as they would buy articles purchased on a daily basis. The consumer will be an informed one, taking all relevant factors into consideration, for example, price, consumption, insurance costs, personal needs or even prestige (22/03/2011, T-486/07, CA, EU:T:2011:104, § 27-38; 21/03/2012, T-63/09, Swift GTi, EU:T:2012:137, § 39-42).

Furthermore, the impact on safety of goods covered by a trade mark (e.g. lights for vehicles, saws, electric accumulators, electric circuit breakers, electric relays) may result in an increase in the relevant consumer’s degree of attention (22/03/2011, T-486/07, CA, EU:T:2011:104, § 41). This is also the case for some of the relevant goods, for instance vehicle bumpers, security harness for vehicle seats and gyroscopes and flight stabilizers for model aircraft.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Benelux.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux territory (see by analogy, 07/09/2006, C-108/05, Europolis, EU:C:2006:530).

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the relevant public, for which the verbal elements of the conflicting signs contain meaningful words.

The verbal element ‘AIROBOT’, which the signs have in common, is, as a whole, meaningless. However, the Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). Therefore, the relevant public will undoubtedly grasp the elements ‘AIR’ and ‘ROBOT’, given the identity with the equivalent words in French, even though these elements are merged, sharing a single letter ‘R’. This assertion is reinforced by the way in which the verbal element ‘AIROBOT’ is depicted in each sign: in the earlier mark, the letter ‘R’ is written in black, in contrast with the remaining letters, which are written in blue; in the contested sign, the three letters ‘AIR’ are written in upper case, in contrast with the remaining letters, which are written in lower case. The word ‘air’ will be understood as referring to ‘the invisible gaseous substance surrounding the earth, a mixture mainly of oxygen and nitrogen’ and the word ‘robot’ as meaning ‘a machine capable of carrying out a complex series of actions automatically, especially one programmable by a computer’ (information extracted from Oxford Dictionaries on 29/03/2017 at www.oxforddictionaries.com); these words also exist as such in French. Bearing in mind that some of the relevant goods and services relate to apparatus for locomotion by air, these elements are weak for some of these goods and services, at least for the opponent’s apparatus for locomotion by air and the contested civilian drones; military drones; amphibious airplanes; aeroplanes; dirigible balloons [airships]; aircraft in Class 12, the contested drones [toys]; gyroscopes and flight stabilizers for model aircraft; flying discs [toys] in Class 28 and the contested airplane maintenance and repair in Class 37, since these flying objects and services include or can relate to robots.

The opponent argues that the figurative elements of the conflicting signs resemble aircraft. However, the Opposition Division considers that the figurative element of the earlier mark could be associated with the image of an eye seen in profile and, therefore, this element would allude to the most common function fulfilled by robots: watching. Consequently, the impact of this figurative element will be limited in the comparison of the signs. The figurative element of the contested sign will be associated with a drone, that is, ‘a remote-controlled pilotless aircraft or missile’ (information extracted from Oxford Dictionaries on 29/03/2017 at www.oxforddictionaries.com). This perception is reinforced by the semantic content conveyed by the words combined in the verbal element ‘AIRobot’ depicted at the bottom of the sign. Bearing in mind that some of the relevant goods are drones, this element is non-distinctive for some of the relevant goods, at least for civilian drones and military drones in Class 12 and drones [toys] in Class 28.

Neither of the signs has any element that could be considered clearly more dominant than other elements.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). Furthermore, in the present case, it has been found that the figurative element of the earlier mark is allusive and the figurative element of the contested sign is non-distinctive, at least for some of the relevant goods. Therefore, these considerations will be taken into account below.

Visually, the signs coincide in their verbal element, ‘AIROBOT’. However, they differ in their figurative elements, in the blue colour used in some of the letters of the earlier mark and in the combination of upper and lower case letters in the contested sign.

Therefore, weighing up the importance of all these elements, the signs are considered visually highly similar.

Aurally, the signs are identical.

Conceptually, neither of the signs has a clear meaning as a whole. However, reference is made to the previous assertions concerning the semantic content conveyed by the marks. In particular, as the signs will be associated with the same meaning as regards the combination of words ‘air’ and ‘robot’, the signs are conceptually highly similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark, as a whole, has no direct meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some weak elements in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of likelihood of confusion implies some interdependence between the relevant factors, and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The goods and services are partly identical, partly similar to varying degrees and partly dissimilar. The degree of attention of the relevant public may vary from average to high.

The signs are visually and conceptually highly similar, since they coincide in their verbal element, ‘AIROBOT’, and the differing figurative elements of the signs have less impact, as explained above. Even though the distinctiveness of the two words, ‘air’ and ‘robot’, that form the coinciding verbal element is lower than average for some of the relevant goods, the fact remains that the combination of these two words into one, sharing the letter ‘R’, is unusual and of particular importance for the present assessment. Furthermore, the distinctiveness of an element of the earlier mark is one of the factors taken into consideration when assessing likelihood of confusion on the part of the public. Thus, even with marks or elements that may be of a weak distinctive character there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T-112/03, Flexi Air, EU:T:2005:102, § 61). Moreover, the signs are aurally identical and the figurative element of the contested sign merely reinforces the semantic content conveyed by the words combined in the verbal element, ‘AIRobot’, as explained above. All these aspects contribute to a finding of likelihood of confusion, as there are no additional elements in the contested sign capable of diminishing this impression of similarity.

In the light of the foregoing, there is a clear likelihood of confusion because the differences between the signs are confined to secondary elements and aspects.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer, even displaying a higher than average degree of attention, will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French-speaking part of the public and, therefore, the opposition is partly well-founded on the basis of the opponent’s Benelux trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of Benelux is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar services, as the similarity of goods and services is a sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Alexandra APOSTOLAKIS

Marta GARCÍA COLLADO

Richard BIANCHI

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.